Appeal No. 2004-2090
Application No. 09/540,391
express teachings or suggestions found in the prior art, or by the implication
contained in such teachings or suggestions. In re Sernaker 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). “The motivation, suggestion or teaching may
come explicitly from statements in the prior art, the knowledge of one of ordinary
skill in the art, or, in some cases the nature of the problem to be solved.” In re
Huston 308 F.3d 1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In
re Kotzab 217 F.3d 1365, 1370, 55 USPQ 1313, 1317 (Fed. Cir. 2000)).
The examiner states, on page 4 of the answer, “Microsoft Project
discloses tasks and task types, grouped according to specific features (Chapter
7, ‘Printing a Custom Bar Chart Schedule (Gantt Chart)’, page 91). Tasks (or
features) are grouped into product development phases.” Further, on page 5 of
the answer, the examiner asserts that “it would have been obvious to modify
Microsoft Project by replacing the Summary Tasks as shown in the Gantt chart
with product features, and listing the tasks required to fulfill or complete the
product features.” On page 6 of the answer, the examiner provides an example
of the results of such a combination. Further, on pages 7 though 10 of the
answer the examiner asserts that Hsu, Buckley and Almási, provide support for
the proposition that it would be obvious to replace the Summary of Tasks in with
product features.
We disagree with the examiner’s rationale. We find no suggestion in
User’s guide to Project or Pyron, to use Microsoft Project with features in lieu of
1 Definition from Random House Dictionary, revised edition 1982
7
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